Monday, 19 September 2011

T 2254/08 – No Hiding

Both the patent proprietor and the opponent filed an appeal against the decision of the Opposition Division to maintain the opposed patent in amended form.

Among other things, the Board had to deal with the (not so frequent) request to exclude a document from file inspection:

[1.1] With its grounds of appeal opponent I filed D14 which is a document concerning a global offering of shares in Guala Closures S.p.A. The document is marked as confidential on its front page. Opponent I also gave the Internet address of the website from which it obtained the document. The address given by opponent I turned out to have an error in it.

Click to enlarge

In its response to the appeal of opponent I the proprietor requested that D14 be removed from the proceedings, that it be excluded from file inspection, and that all references thereto be deleted from the file, since it considered that it was a confidential document that should not be made available to the public.

Opponent I thereupon corrected the Internet address of the website and filed a confirmation from a public notary that he had accessed the website via the Internet and was able to print out documents D14 and the full version of D15a which is in the Italian language and part of which corresponds essentially to D14.

The Board itself accessed the website at the corrected address and found that it could view the document D14 and print out a copy thereof.

The availability of D14 and D15a to an unrestricted public is not therefore in doubt. D15b is an excerpt from a document alleged by opponent I to be the English version of D15a. Proof of this allegation was not supplied by opponent I and it is not necessary to consider this document further in the present decision since its content is covered by D14 and D15a.

[1.2] A 128 governs file inspection. Paragraph (4) of the article indicates that the inspection may be subject to restrictions laid down in the Implementing Regulations and R 144 sets out these restrictions. The documents mentioned above do not fall under any of the categories set out in R 144 paragraphs (a) to (c) EPC so that it must be considered whether they could fall under paragraph (d) of this rule.

Paragraph (d) indicates that the President of the EPO may exclude from file inspection other documents which do not serve the purpose of informing the public about the European patent application or the European patent. Furthermore, in the Decision of the President of the EPO dated 12 July 2007 (OJ 2007, Special edition 3, 125) regarding R 144(d) it is stated in Article 1(2)(a) that a document shall be excluded from file inspection at the request of a party if the inspection could be prejudicial to the legitimate personal or economic interests of legal or natural persons.

[1.3] It is established that the documents were accessible to the public irrespective of any confidentiality statement on the document itself. Since the documents have been available to the public by one means, i.e. the Internet, the economic interest of the proprietor cannot be affected by its being available by another means, i.e. file inspection. The documents are also relevant to the proceedings since they constitute evidence related to an alleged public prior use of a possibly relevant device. The documents therefore do not fall into the category set out in paragraph (d) of R 144 so that there is no reason to exclude them from file inspection.

[1.4] In accordance with Article 1(3) of said Decision of the President a document covered by Article 1(2)(a) thereof shall be provisionally excluded from file inspection until a final decision on the request has been taken. The provisional exclusion had been effected in the present case. The Board has now come to the conclusion that there is no basis for the exclusion from file inspection so that it can now take a final decision lifting the exclusion.

[1.5] Also, the request of the proprietor that the documents be removed from the proceedings and references thereto deleted is refused. As explained above the documents are in the public domain so that there is no reason for any such action, irrespective of whether or not the EPC would even allow such actions.

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.